Expert Group Report Management of Intellectual Property in ... - KoWi

esearch agreements were in a position to effectively manage IP and to market licences, which were
often non-exclusive and attracted little interest. The Bayh-Dole Act gave PROs the option to elect to
own the inventions on the conditions that they would seek patent protection, diligently promote
commercial use through licensing, which could be made exclusive, and that the inventors would enjoy
a share of the net proceeds in the case of successful exploitation.
The situation in Europe is much more complicated, although certain trends start to emerge.
(1) Several countries or regions have recently enacted laws, regulations or policies assigning
ownership or the first right to ownership to PROs. This is the case for Austria, Belgium (with
differences between the three regions), Denmark, France, Spain and Russia.
(2) Several countries are holding on the “professor’s privilege” system assigning inventions to
university professors. This is the case for Finland, Norway and Sweden. Germany had a
similar system, which has been abolished recently. In contrast, Italy has gone the other way by
enacting a professor’s privilege system.
(3) Finally, several other countries have not yet taken a definite policy orientation for technology
transfer from PROs.
In the first category, there are variations. Some regulations assign ownership of inventions to PROs
and others grant a first right to PROs to elect to take ownership of inventions. In all cases, there is a
commitment from the PROs to protect the inventions and to diligently seek commercial exploitation
for the benefit of the public, sometimes with preference to national or regional exploitation.
Most of these regulations are imposing a legal obligation on the inventors to disclose inventions to the
PRO in order to secure the possibility of protection and development. In practice, this is merely
preventing the inventors from filing a patent application on their own or to exploiting inventions to
their own personal benefit without first offering the PRO to exploit them for the benefit of the public.
Such an obligation is rarely sufficient to induce researchers into investigating the possible economic
uses of their discoveries before publishing the results. As we will see later, this is one of the major
challenges facing the Innovation Model.
Even in countries that have professor’s privilege, most inventors found out that they generally have
neither expertise nor resources to file patent applications on their own and find licensees. They have
generally assigned their rights to their PRO in exchange for support in the commercialisation process,
with any benefits being shared between the PRO and inventors. Regardless of the status of ownership
of the IPR, commercial exploitation of new inventions is only ever possible where there is active
support by the inventors. In regimes where there is no first ownership with the PRO, the Group
considers that arrangements should be set up to enable researchers who own their IPR to have access
to a TO, so that effective management of the technology transfer can be ensured
Ownership under Industry Sponsored Agreements
The US Bayh Dole Act provides that the right for PROs to take title to inventions applies to all
research funded in whole or in part by Federal Funds. Since most collaborative research is making
use, at least in part, of background know how, infrastructure and resources from the PRO that are
funded by the Federal Government, US PROs generally insist on owning the results of collaborative
research funded in part by industry in exchange for granting royalty free non-exclusive license rights.
Exclusive licenses are granted in exchange of fair compensation.
In contrast, the common practice in Europe has been for industry partners to insist on receiving full
ownership of the research results they sponsor and to retain the first (only) right to file patent
applications. Since PROs are supposed to own the research results and discoveries made by their
15